Ex Parte Joergl et al

Patent Trial and Appeal Board

Sep 19, 2017

13120035 (P.T.A.B. Sep. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
DKT08089A 6601
EXAMINER
SHEPPARD, JASON A
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
13/120,035 07/06/2011
67424 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
09/20/2017
Volker Joergl
09/20/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER JOERGL and TIMM KIENER
Appeal 2016-005600
Application 13/120,035
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 1—23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Borg Warner, Inc. Appeal
Br. 4.
2 Appeal is taken from the Final Office Action dated February 27, 2015
(“Final Act.”), as modified by the Advisory Action dated April 20, 2015
(“Adv. Act.”).
Appeal 2016-005600
Application 13/120,035
CLAIMED SUBJECT MATTER
Claims 1 and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An exhaust system device comprising:
a housing including at least one inlet, at least one outlet, a
path for exhaust gas between the inlet and the outlet;
wherein the at least one inlet and the at least one outlet are
constructed and arranged to define individual pipe passages in
fluid communication with the path for exhaust gas and the path
for exhaust gas defines a common passage between the at least
on inlet and the at least one outlet; and
at least one least one exhaust flow insulator carried in the
exhaust gas path of the housing to convey exhaust gas through
the housing to limit heat transfer from exhaust gas to the housing,
wherein said at least one insulator comprises at least one of a
ferrous material or a ceramic material and wherein the insulator
extends from the at least on inlet to the at least one outlet; and
wherein a radial space is provided between the insulator
and the housing to define parallel exhaust paths including a
relatively hotter path through the insulator and a relatively cooler
path between the insulator and the housing.
REJECTIONS3
I. Claims 1—16, 18—20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Biiter (US 6,708,488 B2; issued Mar.
23, 2004) and Leroy (US 2009/0183502 Al; published July 23, 2009).
II. Claims 17 and 21 stand rejected under 35 U.S.C. § 103(a) as
3 The Examiner’s rejection of claim 23 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. See Ans. 2.
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Appeal 2016-005600
Application 13/120,035
unpatentable over Biiter, Leroy, and Ruetz (US 5,463,867; issued Nov. 7,
1995).
III. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Biiter and Ruetz.
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that Biiter’s inner
shell 3 corresponds to the claimed exhaust flow insulator. Final Act. 4
(citing Biiter’s Figure). The Examiner determines that Biiter fails to teach
that the insulator comprises either a ferrous or ceramic material, as claimed,
and relies on Feroy for disclosing “an exhaust flow insulator comprising a
ferrous material,” for example, stainless steel. Id. at 4—5 (citing Feroy 145).
The Examiner reasons that it would have been obvious to use ferrous
material for Biiter’s exhaust flow, in light of the teaching of Feroy, because
Feroy’s materials are also disclosed for use in an engine’s exhaust manifold,
and the selection of a known material based on its suitability of its intended
use is deemed obvious.” Id. at 5 (citing MPEP § 2144.07); see, e.g., Feroy
1 8 (“a structure . . . used notably in exhaust manifolds located immediately
at the engine outlet”).
Appellants argue that “Biiter does not disclose, teach, or suggest that
the inner shell 3 is an ‘exhaust flow insulator,”’ but rather that “insulator air
gap 5 between inner shell 3 and outer shell 4 . . . [is] an ‘exhaust flow
insulator.’” Appeal Br. 12.
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Application 13/120,035
The Examiner correctly responds that Biiter discloses that a purpose
of inner shell 3 is to establish air gap 5 to minimize heat transfer from inner
shell 3 to the housing 4” (Ans. 2 (citing Biiter 2:58—64)), and therefore, inner
shell 3 is “reasonably considered” an exhaust flow insulator, as claimed.
The Examiner also correctly responds that Biiter’s disclosure of an inner
shell for establishing an air gap for insulating has the same structure as the
insulator disclosed in Appellant’s Specification.” See Id. (citing Spec. 134,
Fig. 2); see also Adv. Act. 2 (finding Biiter’s inner shell 33 “structurally
identical” to exhaust flow insulator 46 as disclosed in the Specification).
Indeed, Appellants’ Specification discloses that “insulator 46 may
define one or more insulating voids 48 between the insulator 46 and the
housing 36 to further limit heat transfer from the exhaust gas to the housing
35 and minimize or eliminate direct contact of exhaust gas with the housing
36.” Spec. 5:2—5. Biiter’s inner shell 3 is disclosed as performing the same
function: “[bjetween the inner shell 3 [(i.e., the insulator)] and the outer
shell 4 [(i.e., the housing)] there is an insulating volume, in the form of an
air gap 5 [(i.e,. insulating void)].” Biiter 2:54—56. Thus, we are not apprised
of error in the Examiner’s findings with respect to Biiter. Further, claim 1
does not specify a structure for the claimed exhaust flow insulator, except to
require that the insulator is comprised of ferrous or ceramic material. The
claimed “exhaust flow insulator” is, by definition, any structure that
functions as an insulator to a flow of exhaust.
Appellants also argue that Leroy’s inner tube 22 “is merely an inner
tube, supported by retaining layer 26, which is attached to the outer tube,”
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Application 13/120,035
and therefore, Leroy’s inner tube 22 “is not equivalent to the ‘exhaust flow
insulator’ or ‘wherein a radial space is provided between the insulator and
the housing to define parallel exhaust paths,” as claimed. Appeal Br. 12.
The Examiner responds that Leroy’s structure (i.e., inner tube 22) is
relied on “to establish that it is well known to use the claimed material(s) for
a structure such as the inner shell (3) of Biiter in an environment such as the
one Biiter discloses for the inner shell (3).” Ans. 4. We agree. Leroy
discloses that ferrous and ceramic materials are known for use in engine
exhaust manifolds—and specifically exhaust pipes (as set forth supra), and
therefore, the Examiner’s reasoning that it would have been obvious to
select such materials for Biiter’s engine exhaust manifold pipes (i.e., shells
3, 4) has adequate factual underpinnings.
Appellants further argue that the Examiner’s combination is not
obvious in view of Biiter and Leroy because “neither Biiter nor Leroy
disclose an ‘exhaust flow insulator.’” Appeal Br. 13; see also Reply Br. 4—
5. However, as discussed supra, a preponderance of evidence supports the
Examiner’s finding that Biiter’s inner shell 3 discloses an exhaust flow
insulator, as claimed.
Appellants also argue that the Examiner’s combination “changes the
principle of operation of the Leroy reference,” because “[t]he combination of
Biiter and Leroy . . . requires removal of the retaining/supporting layer 26 of
Leroy which . . . [is] necessary to reduce the friction coefficient of the
damping layer between the outer and inner tubes.” Appeal Br. 13.
However, the Examiner is not proposing to bodily incorporate Leroy’s
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Application 13/120,035
multi-layered tube into the exhaust manifold system of Buter. The Examiner
is relying on Leroy for teaching that it is known to make exhaust pipes from
ferrous and/or ceramic materials, such that the selection of ferrous and/or
ceramic materials for Biiter’s inner shell 4 would be obvious to someone
skilled in the art. Thus, Appellants’ argument does not apprise us of any
errors in the Examiner’s findings or reasoning.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of claims 2—16, 18—20, and 22, which depend from claim 1, and
therefore, for the same reasons set forth supra, we also sustain the
Examiner’s rejection of claims 2—16, 18—20, and 22.
Rejection II
Regarding claim 17, which depends from independent claim 1, and
further requires the housing to include “a liquid cooling passage defined
therein adjacent the exhaust path” (Appeal Br. 21 (Claims App.)), the
Examiner finds that Biiter, as modified by Leroy, fails to teach the limitation
of claim 17 and relies on Ruetz for disclosing housing 10 including a path
for exhaust gas with an exhaust flow insulator (i.e., exhaust gas pipe 4) and a
liquid cooling passage adjacent to the exhaust path. Final Act. 10 (citing
Ruetz 3:10—14, Figure.) The Examiner reasons that it would have been
obvious “to have incorporated the teaching of using a liquid cooling passage
as disclosed by Ruetz” in the Biiter’s exhaust system, as modified by Leroy,
“to provide temperature control for the exhaust gases, for example, before
entering a turbine.” Id. (citing Ruetz 3:10-21).
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Appellants argue that Ruetz’s exhaust pipe 4 “is not an ‘exhaust flow
insulator,’ as recited in claim 1. Appeal Br. 14; see also id. at 14—15. The
Examiner responds that Ruetz’s exhaust pipe 4 “is fairly applied as the
exhaust gas insulator,” because Ruetz’s exhaust pipe 4 “is carried in the
exhaust gas path of a housing ... to limit heat transfer.” Ans. 4 (citing
Ruetz col. 3, second para.). We agree that Ruetz’s pipe 4 corresponds to the
claimed exhaust flow insulator, because Ruetz discloses pipe 4 within
housing 10, wherein an air gap (or space 18) is created for exhaust gas flow,
wherein “space 18 between the exhaust gas pipes 4, 5 and the housing 10 has
an insulating effect.” Ruetz 3:14—15. Notwithstanding, the Examiner
correctly responds that Ruetz is relied on for disclosing “a liquid cooling
passage,” such that Appellants’ argument does not address the findings and
reasoning as articulated in the Examiner’s rejection. Ans. 5. Thus,
Appellants’ arguments do not apprise us of error in the Examiner’s findings
or reasoning set forth supra.
Regarding claims 17 and 21, which depend from independent claim 1,
Appellants also argue that “the addition of Ruetz does not overcome the
deficiencies of [the Examiner’s proposed combination of Buter and Leroy],”
or “the fact that combining Leroy and Biiter would not achieve the intent,
purpose, and function of Leroy —the modification the Examiner has
suggested would not reduce the friction coefficient of the damping layer
between the outer and inner tubes.” Reply Br. 5. However, as discussed
supra, we do not agree that there are any deficiencies (or errors) to
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overcome in the Examiner’s rejection of independent claim 1 as
unpatentable over Buter and Leroy.
Accordingly, we sustain the Examiner’s rejection of claims 17 and 21.
Rejection III
Regarding independent claim 23, the Examiner relies on the same
findings with respect to Biiter as relied upon in the rejection of independent
claim 1 (i.e., that Biiter’s inner shell 3 corresponds to the claimed exhaust
flow insulator). Final Act. 12. Appellants argue that “Ruetz does not
overcome the deficiencies of Biiter,” in that neither Biiter nor Ruetz disclose
the claimed exhaust flow insulator. Appeal Br. 16. Appellants also argue
that “[t]he addition of Ruetz does not overcome the fact that combining
Leroy and Biiter would not achieve the intent, purpose, and function of
Leroy — the modification the Examiner has suggested would not reduce the
friction coefficient of the damping layer between the outer and inner tubes.”
Reply Br. 6. We disagree for the reasons stated supra.
Accordingly, we sustain the Examiner’s rejection of independent
claim 23.
DECISION
The Examiner’s rejection of claims 1—23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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